Full text of "USPTO Patents Application 09870801"

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WILLIAM L. ANTHONY (State Bar No. 106908)
ERIC L. WESENBERG (State Bar No. 139696)
MARK R. WEINSTELN (State Bar No. 193043)
ORRICK, HERRINGTON & SUTCLIFFE, LLP
1000 Marsh Road
MenloPark,CA 94025
Telephone: (650) 614-7400
Facsimile: (650) 614-7401

STEVEN ALEXANDER (admitted Pro Hoc Vice)

KRISTIN L. CLEVELAND (admitted Pro Hac Vice)

JAMES E. GERINGER (admitted Pro Hac Vice)

JOHN D. VANDENBERG

KLARQUIST SPARKMAN, LLP

One World Trade Center, Suite 1600

121 S.W. Salmon Street

Portland, OR 97204

Telephone: (503) 226-7391

Facsimile: (503) 228-9446

Attorneys for Defendant and Counterclaimant,
MICROSOFT CORPORATION

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

LNTERTRUST TECHNOLOGIES
CORPORATION, a Delaware corporation,

Plaintiff,

MICROSOFT CORPORATION, a
Washington corporation,

Defendant.

CASE NO. C 01-1640 SB A (MEJ)

MICROSOFT CORPORATION'S
ANSWER AND COUNTERCLAIMS TO
INTERTRUST'S FOURTH AMENDED
COMPLAINT

DEMAND FOR JURY TRIAL

VnCROSOFT CORPORATION, a
Washington corporation,

Counterclaimant,

NTERTRUST TECHNOLOGIES
:ORPORATION, a Delaware corporation,

Counterclaim-Defendant.

Microsoft Corporation's Answer and
Counterclaims to intertrost's fourth amended
complaint: Case No. C 01-1640 SBA (MEJ)

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Defendant Microsoft Corporation ("Microsoft") answers the Fourth Amended
Complaint of InterTrust Technologies Corporation ("InterTrust") as follows:

1 . Microsoft admits that the Fourth Amended Complaint purports to state a
cause of action under the patent laws of the United States, 35 United States Code, §§271 and
281 . Microsoft denies that it has infringed or now infringes the patents asserted against Microsoft
in the Fourth Amended Complaint. Microsoft denies any and all remaining allegations of
paragraph 1 of the Fourth Amended Complaint.

2. Microsoft admits that the Fourth Amended Complaint purports to state a
cause of action over which this Court has subject matter jurisdiction under 28 U.S.C. §§1331 and
1338(a).

3. Microsoft admits, for purposes of this action only, that venue is proper in
this judicial district. Microsoft denies any and all remaining allegations of paragraph 3 of the
Fourth Amended Complaint.

4. On information and belief, Microsoft admits the allegations of paragraph 4
of the Fourth Amended Complaint.

5. Microsoft admits the allegations of paragraph 5 of the Fourth Amended

Complaint.

6. Microsoft denies any and all allegations of paragraph 6 of the Fourth
Amended Complaint, except that it admits, for purposes of this action only, that it transacts
business in this judicial district.

7. Microsoft admits that on its face the title page of U.S. Patent No. 6, 1 85,683
Bl ("the '683 Patent") states that it was issued February 6, 2001, is entitled "Trusted and secure
:echniques, systems and methods for item delivery and execution," and lists "InterTrust
rechnologies Corp." as the assignee. Microsoft denies that the '683 Patent was duly and lawfully
ssued. Microsoft further denies any and all remaining allegations of paragraph 7 of the Fourth
\mended Complaint.

-1-

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA(MEJ)

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8. Microsoft admits that on its face the title page of U.S. Patent No. 6,253,193
Bl ("the '193 Patent") states that it was issued June 26, 2001, is entitled "Systems and methods
For the secure transaction management and electronic rights protection," and lists "InterTrust
rechnologies Corporation" as the assignee. Microsoft denies that the * 193 Patent was duly and
.awfully issued Microsoft further denies any and all remaining allegations of paragraph 8 of the
fourth Amended Complaint.

9. Microsoft admits that on its face the title page of U.S. Patent No. 5,920,861
;"the 6 861 Patent") states that it was issued July 6, 1999, is entitled "Techniques for defining
ising and manipulating rights management data structures," and lists "InterTrust Technologies
Horp " as the assignee. Microsoft denies that the '861 Patent was duly and lawfully issued.
Microsoft further denies any and all remaining allegations of paragraph 9 of the Fourth Amended
Complaint.

10. Microsoft admits that on its face the title page of U.S. Patent No. 5,892,900
"the '900 Patent") states that it was issued April 6, 1999, is entitled "Systems and methods for
ecure transaction management and electronic rights protection," and lists "InterTrust
technologies Coip." as the assignee. Microsoft denies that the '900 Patent was duly and lawfully
ssued. Microsoft further denies any and all remaining allegations of paragraph 10 of the Fourth
amended Complaint.

11. Microsoft admits that on its face the title page of U.S. Patent No. 5,982,891
the '891 Patent") states that it was issued November 9, 1999, is entitled "Systems and methods
3r secure transaction management and electronic rights protection," and lists "InterTrust
echnologies Corp." as the assignee. Microsoft denies that the '891 Patent was duly and lawfully
;sued. Microsoft further denies any and all remaining allegations of paragraph 1 1 of the Fourth
anended Complaint.

12. Microsoft admits that on its face the title page of U.S. Patent No. 5,917,912
'the '912 Patent") states that it was issued June 29, 1999, is entitled "System and methods for
xure transaction management and electronic rights protection," and lists "InterTrust

echnologies Corp." as the assignee. Microsoft denies that the '912 Patent was duly and lawfully

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
■ "2" complaint: Case No. C 01-1640 SB A

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[

issued Microsoft further denies any and all remaining allegations of paragraph 12 of the Fourth
Amended Complaint.

13. Microsoft admits that on its face the title page of U.S. Patent No. 6,157,721
("the '721 Patent") states that it was issued December 5, 2000, is entitled "System and methods
using cryptography to protect secure computing environments/* and lists "InterTrust
Technologies Corp." as the assignee. Microsoft denies that the 721 Patent was duly and lawfully
issued. Microsoft further denies any and all remaining allegations of paragraph 13 of the Fourth
Amended Complaint.

14. Microsoft admits that on its face the title page of U.S. Patent No. 5,915,019
("the '019 Patent") states that it was issued June 22, 1999, is entitled "Systems and methods for
secure transaction management and electronic rights protection," and lists "InterTrust
Technologies Corp." as the assignee. Microsoft denies that the '019 Patent was duly and lawfully
issued. Microsoft further denies any and all remaining allegations of paragraph 14 of the Fourth
Amended Complaint.

1 5. Microsoft admits that on its face the title page of U.S. Patent No. 5,949,876
("the '876 Patent") states that it was issued September 7, 1999, is entitled "Systems and methods
for secure transaction management and electronic rights protection," and lists "InterTrust
Technologies Corp." as the assignee. Microsoft denies that the '876 Patent was duly and lawfully
issued. Microsoft further denies any and all remaining allegations of paragraph 15 of the Fourth
Amended Complaint.

16. Microsoft admits that on its face the title page of U.S. Patent No. 6,1 12,181
(''the '181 Patent") states that it was issued August 29, 2000, is entitled "Systems and methods for
matching, selecting, narrowcasting, and/or classifying based on rights management and/or other
information " and lists "InterTrust Technologies Corp." as the assignee. Microsoft denies that the
'181 Patent was duly and lawfully issued. Microsoft further denies any and all remaining
allegations of paragraph 1 6 of the Fourth Amended Complaint.

17. Microsoft admits that on its face the title page of U.S. Patent No. 6,389,402

Bl ("the '402 Patent") states that it was issued May 14, 2002, is entitled "Systems and methods

Microsoft Corporation's Answer and
Counterclaims to intertrust' s fourth amended
complaint: Case No. C 01-1640 SBA

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for secure transaction management and electronic rights protection," and lists "InterTrust
Technologies Corp." as the assignee. Microsoft denies that the '402 Patent was duly and lawfully
issued Microsoft further denies any and all remaining allegations of paragraph 17 of the Fourth
Amended Complaint.

18. Microsoft repeats and reasserts its responses to paragraphs 1-7 of the
Fourth Amended Complaint, as if fully restated herein.

1 9. Microsoft admits that the Fourth Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Fourth Amended Complaint Microsoft
denies any and all remaining allegations of paragraph 19 of the Fourth Amended Complaint.

20. Microsoft denies any and all allegations of paragraph 20 of the Fourth
Amended Complaint.

21. Microsoft denies any and all allegations of paragraph 21 of the Fourth
Amended Complaint.

22. Microsoft denies any and all allegations of paragraph 22 of the Fourth
Amended Complaint.

23. Microsoft denies any and all allegations of paragraph 23 of the Fourth

Amended Complaint.

24. Microsoft denies any and all allegations of paragraph 24 of the Fourth
Amended Complaint.

25. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 8 of the
Fourth Amended Complaint, as if fully restated herein.

26. Microsoft admits that the Fourth Amended Complaint purports to state a
;ause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now
nfringes the patents asserted against Microsoft in the Fourth Amended Complaint. Microsoft
ienies any and all remaining allegations of paragraph 26 of the Fourth Amended Complaint.

27. Microsoft denies any and all allegations of paragraph 27 of the Fourth
Amended Complaint.

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
"4" complaint: Case No. G 01-1640 SB A

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28. Microsoft denies any and all allegations of paragraph 28 of the Fourth
Amended Complaint.

29. Microsoft denies any and all allegations of paragraph 29 of the Fourth
Amended Complaint.

30. Microsoft denies any and all allegations of paragraph 30 of the Fourth
Amended Complaint.

3 1 . Microsoft denies any and all allegations of paragraph 3 1 of the Fourth
Amended Complaint.

32. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 9 of the
Fourth Amended Complaint, as if fully restated herein.

33. Microsoft admits that the Fourth Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281 . Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Fourth Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 33 of the Fourth Amended Complaint.

34. Microsoft denies any and all allegations of paragraph 34 of the Fourth
Amended Complaint.

35. Microsoft denies any and all allegations of paragraph 35 of the Fourth

Amended Complaint.

36. Microsoft denies any and all allegations of paragraph 36 of the Fourth

Amended Complaint.

37. Microsoft denies any and all allegations of paragraph 37 of the Fourth

Amended Complaint.

38. Microsoft denies any and all allegations of paragraph 38 of the Fourth

Amended Complaint.

39. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 10 of
the Fourth Amended Complaint, as if fully restated herein.

40. Microsoft admits that the Fourth Amended Complaint purports to state a

cause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
"5- complaint: CaseNo. C 01-1640 SBA

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infringes the patents asserted against Microsoft in the Fourth Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 40 of the Fourth Amended Complaint.

41 . Microsoft denies any and all allegations of paragraph 41 of the Fourth
Amended Complaint.

42. Microsoft denies any and all allegations of paragraph 42 of the Fourth
Amended Complaint

43 . Microsoft denies any and all allegations of paragraph 43 of the Fourth
Amended Complaint.

44. Microsoft denies any and all allegations of paragraph 44 of the Fourth
Amended Complaint

45. Microsoft denies any and all allegations of paragraph 45 of the Fourth
Amended Complaint.

46. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 1 1 of
the Fourth Amended Complaint, as if fully restated herein.

47. Microsoft admits that the Fourth Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Fourth Amended Complaint Microsoft
denies any and all remaining allegations of paragraph 47 of the Fourth Amended Complaint.

48. Microsoft denies any and all allegations of paragraph 48 of the Fourth
Amended Complaint.

49. Microsoft denies any and all allegations of paragraph 49 of the Fourth
Amended Complaint.

50. Microsoft denies any and all allegations of paragraph 50 of the Fourth
(\mended Complaint.

51. Microsoft denies any and all allegations of paragraph 51 of the Fourth
Amended Complaint.

52. Microsoft denies any and all allegations of paragraph 52 of the Fourth
Amended Complaint.

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: CaseNo. C 01-1640 SBA

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53. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 12 of
the Fourth Amended Complaint, as if fully restated herein.

54. Microsoft admits that the Fourth Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Fourth Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 54 of the Fourth Amended Complaint.

55. Microsoft denies any and all allegations of paragraph 55 of the Fourth

Amended Complaint.

56. Microsoft denies any and all allegations of paragraph 56 of the Fourth

Amended Complaint.

57. Microsoft denies any and all allegations of paragraph 57 of the Fourth

Amended Complaint.

58. Microsoft denies any and all allegations of paragraph 58 of the Fourth

Amended Complaint.

59. Microsoft denies any and all allegations of paragraph 59 of the Fourth

Amended Complaint.

60. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 13 of
the Fourth Amended Complaint, as if fully restated herein.

61 . Microsoft admits that the Fourth Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Fourth Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 61 of the Fourth Amended Complaint.

62. Microsoft denies any and all allegations of paragraph 62 of the Fourth

Amended Complaint.

63. Microsoft denies any and ail allegations of paragraph 63 of the Fourth

Amended Complaint.

64. Microsoft denies any and all allegations of paragraph 64 of the Fourth

Amended Complaint.

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA

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65. Microsoft denies any and all allegations of paragraph 65 of the Fourth
Amended Complaint.

66. Microsoft denies any and all allegations of paragraph 66 of the Fourth
Amended Complaint.

67. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 14 of
the Fourth Amended Complaint, as if fully restated herein.

68. Microsoft admits that the Fourth Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281 . Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Fourth Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 68 of the Fourth Amended Complaint

69. Microsoft denies any and all allegations of paragraph 69 of the Fourth
Amended Complaint.

70. Microsoft denies any and all allegations of paragraph 70 of the Fourth
Amended Complaint.

7 1 . Microsoft denies any and all allegations of paragraph 7 1 of the Fourth
Amended Complaint.

72. Microsoft denies any and all allegations of paragraph 72 of the Fourth
Amended Complaint.

73. Microsoft denies any and all allegations of paragraph 73 of the Fourth
Amended Complaint.

74. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 15 of
the Fourth Amended Complaint, as if fully restated herein.

75. Microsoft admits that the Fourth Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Fourth Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 75 of the Fourth Amended Complaint,

76. Microsoft denies any and all allegations of paragraph 76 of the Fourth
Amended Complaint.

Microsoft Corporation's Answer and
Counterclaims to intertrust' s fourth amended
complaint: CaseNo. C 01-1640 SBA

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77. Microsoft denies any and all allegations of paragraph 77 of the Fourth
Amended Complaint.

78. Microsoft denies any and all allegations of paragraph 78 of the Fourth
Amended Complaint.

79. Microsoft denies any and all allegations of paragraph 79 of the Fourth
Amended Complaint.

80. Microsoft denies any and all allegations of paragraph 80 of the Fourth
Amended Complaint.

81. Microsoft repeats and reasserts its responses to paragraphs 1 -6 and 1 6 of
the Fourth Amended Complaint, as if fully restated herein.

82. Microsoft admits that the Fourth Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies mat it has infringed or now
infringes the patents asserted against Microsoft in the Fourth Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 82 of the Fourth Amended Complaint.

83. Microsoft denies any and all allegations of paragraph 83 of the Fourth
Amended Complaint.

84. Microsoft denies any and all allegations of paragraph 84 of the Fourth
Amended Complaint.

85. Microsoft denies any and all allegations of paragraph 85 of the Fourth

Amended Complaint.

86. Microsoft denies any and all allegations of paragraph 86 of the Fourth

Amended Complaint.

87. Microsoft denies any and all allegations of paragraph 87 of the Fourth

Amended Complaint.

88. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 17 of
the Fourth Amended Complaint, as if fully restated herein.

89. Microsoft admits that the Fourth Amended Complaint purports to state a

cause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
"9" complaint: Case No. C 01-1640 SBA

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infringes the patents asserted against Microsoft in the Fourth Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 89 of the Fourth Amended Complaint.

90. Microsoft denies any and all allegations of paragraph 90 of the Fourth
Amended Complaint.

91. Microsoft denies any and all allegations of paragraph 91 of the Fourth
Amended Complaint.

92. Microsoft denies any and all allegations of paragraph 92 of the Fourth
Amended Complaint.

93. Microsoft denies any and all allegations of paragraph 93 of the Fourth
Amended Complaint.

94. Microsoft denies any and all allegations of paragraph 94 of the Fourth
Amended Complaint.

AFFIRMATIVE AND OTHER DEFENSES
Further answering the Fourth Amended Complaint, Microsoft asserts the following
iefenses. Microsoft reserves the right to amend its answer with additional defenses as further
nformation is obtained.

First Defense: Noninfringement of the Asserted Patents

95. Microsoft has not infringed, contributed to the infringement of, or induced
he infringement of U.S. Patent No. 6,185,683 Bl ("the '683 Patent"), U.S. Patent No. 6,253,193
il ("the '193 Patent"), U.S. Patent No. 5,920,861 ("the '861 Patent"), U.S. Patent No. 5,892,900
"the '900 Patent"), U.S. Patent No. 5,982,891 ("the '891 Patent"), U.S. Patent No. 5,917,912
"the '912 Patent"), U.S. Patent No. 6,157,721 ("the '721 Patent"), U.S. Patent No. 5,915,019
"the '019 Patent"), U.S. Patent No. 5,949,876 ("the '876 Patent"), U.S. Patent No. 6,112,181
"the '181 Patent"), or U.S. Patent No. 6,389,402 Bl ("the '402 Patent") and is not liable for
nfringement thereof.

96. Any and all Microsoft products or methods that are accused of
ifringement have substantial uses that do not infringe and therefore cannot induce or contribute

3 the infringement of the '683 Patent, the '193 Patent, the '861 Patent, the '900 Patent, the '891

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA

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Patent, the '912 Patent, the '721 Patent, the '019 Patent, the '876 Patent, the '181 Patent, or the
'402 Patent.

Second Defense: Invalidity of the Asserted Patents

97. On information and belief, the '683 Patent, the '193 Patent, the '861
Patent, the '900 Patent, the '891 Patent, the '912 Patent, the '721 Patent, the '019 Patent, the '876
Patent, the '181 Patent, and the '402 Patent are invalid for failing to comply with the provisions
of the Patent Laws, Title 35 U.S.C., including without limitation one or more of 35 U.S.C. §§
102, 103 and 112.

Third Defense: Unavailability of Relief

98. On information and belief, Plaintiff has failed to plead and meet the
•equirements of 35 U.S.C. § 271(b) and (c) and is not entitled to any alleged damages prior to
jroviding any actual notice to Microsoft of the '683 Patent, the ' 193 Patent, the '861 Patent, the
900 Patent, the '891 Patent, the '912 Patent, the '721 Patent, the '019 Patent, the '876 Patent, the
1 8 1 Patent, or the '402 Patent.

Fourth Defense: Unavailability of Relief

99. On information and belief, Plaintiff has failed to plead and meet the
equirements of 35 U.S.C. § 284 for enhanced damages and is not entitled to any damages prior to
iroviding any actual notice to Microsoft of the '683 Patent, the '193 Patent, the '861 Patent, the
900 Patent, the '891 Patent, the '912 Patent, the '721 Patent, the '019 Patent, the '876 Patent, the
18 1 Patent, and/or the '402 Patent and any alleged infringement thereof.

Fifth Defense: Unavailability of Relief

100. On information and belief, Plaintiff has failed to plead and meet the
squirements of 35 U.S.C. § 287, and has otherwise failed to show that it is entitled to any
amages.

Sixth Defense: Prosecution History Estoppel

101. Plaintiffs alleged causes of action for patent infringement are barred under

le doctrine of prosecution history estoppel, and Plaintiff is estopped from claiming that the '683

atent, the '193 Patent, the '861 Patent, the '900 Patent, the '891 Patent, the '912 Patent, the '721

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
"11" complaint: Case No. C 01-1640 SBA

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Patent, the '019 Patent, the '876 Patent, the '181 Patent, and/or the '402 Patent covers or includes
any accused Microsoft product or method.

Seventh Defense: Dedication to the Public

102. Plaintiff has dedicated to the public all methods, apparatus, and products
disclosed in the '683 Patent, the ' 193 Patent, the '861 Patent, the '900 Patent, the '891 Patent, the
'912 Patent, the '721 Patent, the '019 Patent, the '876 Patent, the '181 Patent, and/or the '402
Patent but not literally claimed therein, and is estopped from claiming infringement by any such
public domain methods, apparatus, and products.

Eighth Defense: Use/Manufacture Bv/For United States Government

103 . To the extent that any accused product has been used or manufactured by
or for the United States, Plaintiffs claims and demands for relief are barred by 28 U.S.C. § 1498.

Ninth Defense: License

104. To the extent that any of Plaintiff s allegations of infringement are
premised on the alleged use, sale, offer for sale, license or offer of license of products that were
manufactured by or for a licensee of InterTrust and/or provided by or to Microsoft by or to a
licensee of InterTrust, such allegations are barred pursuant to license.

Tenth Defense: Acquiescence

105. Plaintiff has acquiesced in at least a substantial part of the Microsoft
conduct alleged to infringe.

Eleventh Defense: Laches

106. Plaintiffs claims for relief are barred, in whole or in part, by the equitable
doctrine of laches.

Twelfth Defense: Inequitable Conduct

107. The '861 Patent claims are unenforceable due to inequitable conduct,
including those acts and failures to act set forth in Microsoft's Counterclaim for Declaratory
Judgment of Unenforceability of the '861 Patent, set forth below.

-12-

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA

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Thirteenth Defense: Inequitable Conduct

108. The '900 Patent claims are unenforceable due to inequitable conduct,
including those acts and failures to act set forth in Microsoft's Counterclaim for Declaratory
Judgment of Unenforceability of the '900 Patent, set forth below.

Fourteenth Defense: Inequitable Conduct

109. The '721 Patent claims are unenforceable due to inequitable conduct,
including those acts and failures to act set forth in Microsoft's Counterclaim for Declaratory
Judgment of Unenforceability of the '721 Patent, set forth below.

Fifteenth Defense: Inequitable Conduct

110. The '181 Patent claims are unenforceable due to inequitable conduct,
including those acts and failures to act set forth in Microsoft's Counterclaim for Declaratory
Judgment of Unenforceability of the '181 Patent, set forth below.

Sixteenth Defense: Unenforceability

111. The claims of the '891 Patent, the '912 Patent, the '861 Patent, the '683
Patent, the '193 Patent, the '900 Patent, the '721 Patent, the '019 Patent, the'876 Patent, the ' 181
Patent, and the '402 Patent are unenforceable due to unclean hands, inequitable conduct and
misuse and illegal extension of the patent right, including those acts and failures to act set forth in
Count XVIII of Microsoft's Counterclaims, set forth below.

Seventeenth Defense: Waiver

112. InterTrust has waived any accusations against Microsoft not made in the
InterTrust's Amended Disclosures of Asserted Claims served October 29, 2002, including in
particular any "draft" accusations referred to in Court October 22, 2002, that were not included in
those Amended Disclosures.

-13-

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA

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COUNTERCLAIMS

COUNT I - DECLARATORY
JUDGMENT OF NONINFRINGEMENT

1 . This action arises under the patent laws of the United States, Title 35
U.S.C. §§ 1, et seq. This Court has subject matter jurisdiction over this counterclaim under 28
U.S.C. §§ 1338, 2201, and 2202.

2. Microsoft Corporation ("Microsoft") is a Washington corporation with its
principal place of business in Redmond, Washington.

3 . On information and belief, Plaintiff /Counterclaim Defendant InterTrust
Technologies Corporation ("InterTrust") is a Delaware corporation with its principal place of
business in Santa Clara, California.

4. InterTrust purports to be the owner of U.S. Patent Nos. 6,185,683 Bl ("the
'683 Patent"), 6,253,193 Bl ("Hie 4 193 Patent"), 5,940,504 ("the '504 Patent"), 5,920,861 ("the
'861 Patent"), U.S. Patent No. 5,892,900 ("the '900 Patent"), U.S. Patent No. 5,982,891 ("the
'891 Patent"), U.S. Patent No. 5,917,912 ("the '912 Patent"), U.S. Patent No. 6,157,721 ("the
'721 Patent"), U.S. Patent No. 5,915,019 ("the '019 Patent"), U.S. Patent No. 5,949,876 ("the
'876 Patent"), U.S. Patent No. 6,112,181 ("the '181 Patent"), and U.S. Patent No. 6,389,402 Bl
("the '402 Patent").

5. InterTrust alleges that Microsoft has infringed the '683 Patent, the '193
Patent, the '861 Patent, the '900 Patent, the '891 Patent, the '912 Patent, the '721 Patent, the '019
Patent, the '876 Patent, the '181 Patent, and the '402 Patent. InterTrust previously alleged that
Microsoft has infringed the '504 Patent. InterTrust now concedes that the previously accused
Microsoft conduct and products do not infringe any claim of the '504 Patent. No Microsoft
product accused in this lawsuit infringes any claim of the '504 Patent.

6. No Microsoft product has infringed, either directly or indirectly, any claim
of the '683 Patent, the 6 193 Patent, the '504 Patent, the '861 Patent, the '900 Patent, the '891
Patent, the '912 Patent, the '721 Patent, the '019 Patent, the '876 Patent, the '181 Patent, or the

'402 Patent, and Microsoft is not liable for infringement thereof.

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
"14- complaint: Case No. C 01-1640 SB A

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7. An actual controversy, within the meaning of 28 U.S.C. § § 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to the
infringement or noninfringement of the '683 Patent, the '193 Patent, the '861 Patent, the '900
Patent, the '891 Patent, the '912 Patent, the '721 Patent, the '019 Patent, the '876 Patent, the '181
Patent, and the '402 Patent. If InterTrust does not concede noninfringement of the '504 Patent,
men such an actual controversy also exists for the '504 Patent.

COUNT D - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '683 PATENT

8. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims, as if
fully restated here.

9. The '683 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103 and 1 12.

10. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to

whether the claims of the '683 Patent are valid or invalid.

COUNT m - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '193 PATENT

1 1 . Microsoft repeats and realleges paragraphs 1 -5 of its Counterclaims as if
fully restated here.

12. The ' 1 93 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103 and 1 12.

13. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
;xists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the ' 193 Patent are valid or invalid.

COUNT IV - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '504 PATENT

14. Microsoft repeats and realleges paragraphs 1 -5 of its Counterclaims as if
iully restated here.

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA

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15. The '504 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103 and 1 12.

16. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to

whether the claims of the '504 Patent are valid or invalid.

COUNT V - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '861 PATENT

17. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if
fully restated here.

18. The '861 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103 and 112.

19. An actual controversy, within the meaning of 28 U.S.C. §§ 2201. and 2202,

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to

whether the claims of the '861 Patent are valid or invalid.

COUNT VI - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '900 PATENT

20. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if
fully restated here.

21. The '900 Patent, and each claim thereof, is invalid for failing to comply
ivith the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 1 12.

22. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
:xists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
vhether the claims of the '900 Patent are valid or invalid.

COUNT VII - DECLARATORY
JUDGMENT OF INVALIDITY OF THE ( 891 PATENT

23. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if
ully restated here.

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Microsoft Corporation ' s Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA

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24. The '891 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 1 12.

25. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '891 Patent are valid or invalid.

COUNT Vm - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '912 PATENT

26. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if
fully restated here.

27. The '912 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 1 12.

28. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '912 Patent are valid or invalid.

COUNT IX - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '721 PATENT

29. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if
fully restated here.

30. The '721 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 1 12.

31. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '721 Patent are valid or invalid.

COUNT X - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '019 PATENT

32. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if
fully restated here.

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
" * ' " complaint: Case No. C 0 1 - 1 640 SB A

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33. The '019 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 1 12.

34. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '019 Patent are valid or invalid.

COUNT XI - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '876 PATENT

35. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if
fully restated here.

36. The ' 876 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 1 12.

37. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '876 Patent are valid or invalid.

COUNT XH - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '181 PATENT

38. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if
fully restated here.

39. The ' 181 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 1 12.

40. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the ' 1 81 Patent are valid or invalid.

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Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA

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COUNT Xm - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '402 PATENT

41. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if
fully restated here.

42. The '402 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 1 12.

43. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '402 Patent are valid or invalid.

COUNT XIV - DECLARATORY JUDGMENT
OF UNENFORCEABILITY OF THF '861 PATENT

44. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims, as if
fully restated here.

45. Claims 1-129 of the '861 Patent application (SN 08/805,804), and claims
1-101 of the '861 Patent, were not and are not entitled to the benefit of any application filing date
prior to February 25, 1997, under 35 U.S.C. § 120 or otherwise.

46. On information and belief, an article entitled "DigiBox: A Self-Protecting
Container for Information Commerce" (hereinafter "the Sibert article") was published in the
United States in July 1995. A copy of the Sibert article has been produced bearing bates numbers
MSI022935-MSI022947.

47. "Exhibit A" refers to the document attached as Exhibit A to Microsoft's
counterclaims filed in response to InterTrust's Second Amended Complaint (namely, a reprint of
an article entitled "DigiBox: A Self-Protecting Container for Information Commerce"). On
information and belief, the content of pages 2-14 of Exhibit A was presented at a public
conference in the United States in July 1995.

48. "Exhibit B" refers to the document attached as Exhibit B to Microsoft's

counterclaims filed in response to InterTrust's Second Amended Complaint (namely, a copy of a

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
" * "" complaint: CaseNo.C01-1640SBA

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page from an International Application published under the Patent Cooperation Treaty (PCT),
bearing International Publication Number WO 96/27155 hereinafter (hereafter "the WO 96/27155
(PCT) publication")).

49. On information and belief, the WO 96/271 55 (PCT) publication has, at all
times since its filing date, been owned and controlled by InterTrust or its predecessors in interest.

50. The WO 96/27 1 55 (PCT) publication was published on September 6, 1 996.

5 1 . United States Patent No. 5,9 1 0,987 ("the ' 987 Patent") issued on June 8,
1999, from a continuation of an application filed on February 13, 1995.

52. The Sibert article is prior art to claims 1-129 of the '861 Patent application
;SN 08/805,804).

53 . The Sibert article is prior art to claims 1 - 1 0 1 of the ' 86 1 Patent under 3 5
J.S.C. § 102(b).

54. The WO 96/27155 (PCT) publication is prior art to claims 1-129 of the
861 Patent application (SN 08/805,804).

55. The WO 96/27155 (PCT) publication is prior art to claims 1-101 of the
861 Patent under 35 U.S.C. § 102(a).

56. The '987 Patent is prior art to claims 29-129 of the '861 Patent application
SN 08/805,804).

57. The '987 Patent is prior art to claims 1-101 of the '861 Patent, under 35
J.S.C. § 102(e).

58. The Sibert article was material to the patentability of claim 1 of the '861
'atent application (SN 08/805,804).

59. The Sibert article was material to the patentability of claims 2-129 of the
361 Patent application (SN 08/805,804).

60. The WO 96/27155 (PCT) publication was material to the patentability of
Laim 1 of the '86 1 Patent application (SN 08/805,804).

61. The WO 96/27155 (PCT) publication was material to the patentability of

laims 2-129 of the '861 Patent application (SN 08/805,804).

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
"20- complaint: Case No. C 01-1640 SBA

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Orrick
Herrinoton
& sutcliffe llp

Silicon Valley

62. The '987 Patent was material to the patentability of claims 29-129 of the
* 86 1 Patent application (SN 08/805,804).

63. One or more of the * 861 Patent applicants knew, while the '861 Patent
application (SN 08/805,804) was pending, of the July 1995 publication of the Sibert article.

64. On information and belief, one or more of the '861 Patent applicants knew,
while the '861 Patent application (SN 08/805,804) was pending, of the September 1996
publication of the WO 96/27 155 (PCT) publication.

65. On information and belief, one or more of the '861 Patent applicants knew,
while the '861 Patent application (SN 08/805,804) was pending, of the June 8, 1999 issuance of
the '987 Patent.

66. On information and belief, one or more of the attorneys who prosecuted or
assisted in prosecuting the '861 Patent application (SN 08/805,804) knew, while that application
was pending, of the July 1995 publication of the Sibert article.

67. One or more of the attorneys who prosecuted or assisted in prosecuting the
'861 Patent application (SN 08/805,804) knew, while that application was pending, of the
September 1996 publication of the WO 96/27155 (PCT) publication.

68. One or more of the attorneys who prosecuted or assisted in prosecuting the
'861 Patent application (SN 08/805,804) knew, while that application was pending, of the June 8,
1 999 issuance of the '987 Patent.

69. The applicants for the '861 Patent did not cite the Sibert article to the
Patent Office as prior art to any of claims 1-129 of the '861 Patent application (SN 08/805,804).

70. The applicants for the ' 86 1 Patent did not cite the WO 96/27 1 55 (PCT)
publication to the Patent Office as prior art to any of claims 1-129 of the '861 Patent application
(SN 08/805,804).

71. The applicants for the '861 Patent did not cite the '987 Patent to the Patent
Office as prior art to any of claims 1-129 of the '861 Patent application (SN 08/805,804).

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Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA

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72. The applicants for the '861 Patent did not cite to the Patent Office as prior
art to any of claims 1-129 of the '861 Patent application (SN 08/805,804) any reference having
the same or substantially the same disclosure as the Sibert article.

73 . The applicants for the '861 Patent did not cite to the Patent Office as prior
art to any of claims 1-129 of the '861 Patent application (SN 08/805,804) any reference having
the same or substantially the same disclosure as the WO 96/27155 (PCT) publication.

74. The applicants for the ' 861 Patent did not cite to the Patent Office as prior
art to any of claims 1-129 of the '861 Patent application (SN 08/805,804) any reference having
the same or substantially the same disclosure as the '987 Patent.

75. The Sibert article is not merely cumulative over any reference cited as prior
art during the prosecution of the '861 Patent application (SN 08/805,804).

76. The WO 96/27 1 55 (PCT) publication is not merely cumulative over any
reference cited as prior art during the prosecution of the '861 Patent application (SN 08/805,804).

77. The '987 Patent is not merely cumulative over any reference cited as prior
art during the prosecution of the '861 Patent application (SN 08/805,804).

78. On information and belief, one or more of the '861 Patent applicants
believed, during pendency of claim 1 of the '861 Patent application (SN 08/805,804), that the
Sibert article disclosed an embodiment of claim 1 of the '861 Patent application (SN 08/805,804).

79. InterTrust contends that none of the '86 1 Patent applicants believed, during
pendency of claim 1 of the '861 Patent application (SN 08/805,804), that the Sibert article
discloses an embodiment of claim 1 of the '861 Patent application (SN 08/805,804).

80. On information and belief, one or more of the '861 Patent applicants
believed, during pendency of claim 1 of the '861 Patent application (SN 08/805,804), that the
WO 96/27155 (PCT) publication disclosed an embodiment of claim 1 of the '861 Patent
application (SN 08/805,804).

81. InterTrust contends that none of the '861 Patent applicants believed, during
pendency of claim 1 of the '861 Patent application (SN 08/805,804), that the WO 96/27155

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Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SB A

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(PCT) publication discloses an embodiment of claim 1 of the '861 Patent application (SN
08/805,804).

82. On information and belief, one or more of the '861 Patent applicants
believed, while the '861 Patent application (SN 08/805,804) was pending, that the Sibert article
was material to the patentability of claims 1-129 of the *861 Patent application (SN 08/805,804),
but, with deceptive intent, failed to disclose that reference as prior art to the Patent Office.

83. On information and belief, one or more of the '861 Patent applicants
believed, while the '861 Patent application (SN 08/805,804) was pending, that the WO 96/27155
(PCT) publication was material to the patentability of claims 1-129 of the '861 Patent application
(SN 08/805,804), but, with deceptive intent, failed to disclose that reference as prior art to the
Patent Office.

84. On information and belief, one or more of the '861 Patent applicants
believed, while the '861 Patent application (SN 08/805,804) was pending, that the '987 Patent
was material to the patentability of claims 29-129 of the '861 Patent application (SN 08/805,804),
but, with deceptive intent, failed to disclose that reference as prior art to the Patent Office.

85. The '861 Patent is unenforceable due to the inequitable conduct of the '861
Patent applicants and/or agents before the Patent and Trademark Office in connection with the
'861 Patent application (SN 08/805,804).

86. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to

whether the claims of the '861 Patent are enforceable.

COUNT XV - DECLARATORY JUDGMENT
OF UNENFORCEABILITY OF THE '900 PATENT

87. Microsoft repeats and realleges paragraphs 1-5 and 46-47 of its
Counterclaims, as if fully restated here.

88. The application and issued claims of the '900 Patent were not and are not
entitled to the benefit of any application filing date prior to August 30, 1996, under 35 U.S.C. §
120 or otherwise.

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
■23" complaint: Case No. C 01-1640 SBA

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89. The Sibert article is prior art to the application and issued claims of the
'900 Patent under 35 U.S.C. § 102(b).

90. The Sibert article was material to the patentability of application and issued
claims of the '900 Patent, including, for example, issued claims 86 and 182.

91. One or more of the '900 Patent applicants knew of the July 1995
publication of the Sibert article while the '900 Patent application (SN 08/706,206) was pending.

92. On information and belief, one or more of the attorneys who prosecuted or
assisted in the prosecution of the '900 Patent application (SN 08/706,206) knew of the July 1995
publication of the Sibert article while the '900 Patent application was pending.

93 . The applicants for the '900 Patent did not cite the Sibert article to the
Patent Office as prior art to any claims of the '900 Patent application (SN 08/706,206).

94. The applicants for the '900 Patent did not cite to the Patent Office as prior
art to any claims of the '900 Patent application (SN 08/706,206) any reference having the same or
substantially the same disclosure as the Sibert article.

95. The Sibert article is not merely cumulative over any reference cited as prior
art during the prosecution of the '900 Patent application (SN 08/706,206).

96. On information and belief, one or more of the '900 Patent applicants
believed, during pendency of claim 1 of the '900 Patent application (SN 08/706,206), that the
Sibert article disclosed an embodiment of claim 1 of the '900 Patent application (SN 08/706,206).

97. On information and belief, one or more of the '900 Patent applicants
believed, while the '900 Patent application (SN 08/706,206) was pending, that the Sibert article
was material to the patentability of various claims of the '900 Patent application (SN 08/706,206),
but, with deceptive intent, failed to disclose that reference as prior art to the Patent Office.

98. The '900 Patent is unenforceable due to the inequitable conduct of the '900
Patent applicants and/or agents before the Patent and Trademark Office in connection with the
'900 Patent application (SN 08/706,206).

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Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01 -1640 SBA

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99. An actual controversy, within the meaning of 28 U.S.C. § § 220 1 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '900 Patent are enforceable.

COUNT XVI - DECLARATORY JUDGMENT
OF UNENFORCEABILITY OF THE '721 PATENT

100. Microsoft repeats and realleges paragraphs 1-5 and 51 of its Counterclaims,
is if fully restated herein.

101. Claims 1-43 of the '721 Patent application (SN 08/689,754), and claims 1-
U of the '721 Patent, were not and are not entitled to the benefit of any application filing date
>rior to August 12, 1996, tinder 35 U.S.C. § 120 or otherwise.

102. The '987 Patent is prior art to claims 1-8, 10-29, and 31-43 of the '721
'atent application (SN 08/689,754).

103. The '987 Patent is prior art to claims 1-41 of the '721 Patent under 35
J.S.C. § 102(e).

104. The '987 Patent was material to the patentability of claims 1-8, 10-29, and.
1-43 of the '721 Patent application (SN 08/689,754).

105. One or more of the '721 Patent applicants knew, while the '721 Patent
pplication (SN 08/689,754) was pending, of the '987 Patent.

1 06. On information and belief, one or more of the attorneys who prosecuted or
ssisted in prosecuting the '721 Patent application (SN 08/689,754) knew, while that application
ras pending, of the '987 Patent.

1 07. The applicants for the '72 1 Patent did not cite the '987 Patent to the Patent
iffice as prior art to any of claims 1-43 of the '721 Patent application (SN 08/689,754).

108. The applicants for the '72 1 Patent did not cite to the Patent Office as prior
1 to any of claims 1-43 of the '721 Patent application (SN 08/689,754) any reference having the
ime or substantially the same disclosure as the '987 Patent.

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Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA

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109. The '987 Patent is not merely cumulative over any reference cited as prior
art during the prosecution of the '721 Patent application (SN 08/689,754).

110. On information and belief, one or more of the '721 Patent applicants
believed, while the '721 Patent application (SN 08/689,754) was pending, that the '987 Patent
was material to the patentability of one or more of claims 1-8, 10-29, and 31-43 of the '721 Patent
application (SN 08/689,754), but, with deceptive intent, failed to disclose that reference as prior
art to the Patent Office.

111. The applicants for the '721 Patent knew of, but did not cite to the Patent
Office as prior art to any of the claims of the '721 Patent application (SN 08/689,754), printed
publications regarding the use of digital signatures with Java.

1 12. On information and belief, one or more of the attorneys who prosecuted or
assisted in prosecuting the '721 Patent application knew, while that application was pending, of
printed publications describing the use of digital signatures with Java, but did not cite those
publications to the Patent Office.

1 13. On information and belief, one or more of the '721 Patent applicants knew
of General Magic's Telescript, (hereinafter "Telescript"), while the '721 Patent application (SN
08/689,754) was pending.

114. On information and belief, one or more of the attorneys who prosecuted or
assisted in prosecuting the '721 Patent application knew, while that application was pending, of
relescript.

115. On information and belief, one or more of the '721 Patent applicants knew,
while the '721 Patent application (SN 08/689,754) was pending, of work done by Doug Tygar
ind Bennett Yee regarding "Strongbox," (hereinafter "Strongbox").

116. On information and belief, one or more of the attorneys who prosecuted or
issisted in prosecuting the '721 Patent application knew, while that application was pending, of
vork done by Doug Tygar and Bennett Yee regarding "Strongbox."

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Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA

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117. Strongbox, Telescript, and publications regarding the use of digital
signatures with Java are each material prior art to the * 721 Patent

118. On information and belief, InterTrust's failure to disclose Strongbox,
relescript, and/or publications regarding the use of digital signatures with Java was made with
deceptive intent.

119. The '721 Patent is unenforceable due to the inequitable conduct of the ' 72 1
3 atent applicants and/or agents before the Patent and Trademark Office in connection with the
721 Patent application (SN 08/689,754).

120. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
vhether the claims of the '721 Patent are enforceable.

COUNT XVH - DECLARATORY JUDGMENT
OF UNENFORCEABILITY OF THE '181 PATENT

121. Microsoft repeats and realleges paragraphs 1-5 and 46-51 of its
Counterclaims, as if fully restated herein.

122. The claims of the 4 1 81 Patent were not and are not entitled to the benefit of
ny application filing date prior to November 6, 1997, under 35 U.S.C. § 120 or otherwise.

123. The '987 Patent is prior art to the claims of the '181 Patent.

124. The '987 Patent is prior art to each claim of the * 1 8 1 Patent under 3 5
J.S.C. § 102(e).

125. The '987 Patent was material to the patentability of one or more claims of
le '181 Patent application (SN 08/965,185).

126. One or more of the ' 181 Patent applicants knew, while the * 181 Patent
pplication (SN 08/965,185) was pending, of the '987 Patent.

127. On information and belief, one or more of the attorneys who prosecuted or
ssisted in prosecuting the ' 181 Patent application knew, while that application was pending, of
xe '987 Patent.

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
"27- complaint: Case No. C 0 1 - 1 640 SB A

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128. The applicants for the ' 181 Patent did not cite the '987 Patent to the Patent
Office as prior art to any of the claims of the '181 Patent application (SN 08/965,185).

129. The applicants for the ' 1 8 1 Patent did not cite to the Patent Office as prior
art to any of the claims of the '181 Patent application any reference having the same or
substantially the same disclosure as the '987 Patent

130. The '987 Patent is not merely cumulative over any reference cited as prior
art during the prosecution of the ' 181 Patent application.

131. On information and belief, one or more of die ' 1 8 1 Patent applicants
believed, while the '181 Patent application (SN 08/965,185) was pending, that the '987 Patent
was material to the patentability of one or more of claims of the '181 Patent application (SN
08/689,754).

132. On information and belief, one or more of the '181 Patent applicants, with
deceptive intent, failed to disclose the '987 Patent as prior art to the Patent Office during the
prosecution of the '181 Patent application (SN 08/965,185).

133. The Sibert article is prior art to the application and issued claims of the
'181 Patent under 35 U.S.C. § 102(b).

134. The Sibert article was material to the patentability of one or more claims
sought by InterTrust in the course of the ' 1 8 1 Patent application.

135. The Sibert article was material to the patentability of one or more claims of
the '181 Patent.

1 36. One or more of the ' 1 8 1 Patent applicants knew of the July 1 995
publication of the Sibert article while the '181 Patent application (SN 08/965,185) was pending.

137. On information and belief, one or more of the attorneys who prosecuted or
assisted in the prosecution of the ' 1 8 1 Patent application (SN 08/965, 1 85) knew of the July 1 995
publication of the Sibert article while the ' 181 Patent application was pending.

1 38. The applicants for the ' 1 8 1 Patent did not cite the Sibert article to the
Patent Office as prior art to any claims of the '181 Patent application (SN 08/965,185).

-28-

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA

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139. The applicants for the '181 Patent did not cite to the Patent Office as prior
art to any claims of the ' 1 8 1 Patent application (SN 08/965, 1 85) any reference having the same or
substantially the same disclosure as the Sibert article.

140. The Sibert article is not merely cumulative over any reference cited as prior
art during the prosecution of the ' 1 8 1 Patent application (SN 08/965, 185).

141 . On information and belief, one or more of the ' 1 8 1 Patent applicants
believed, while the '181 Patent application (SN 08/965,185) was pending, that the Sibert article
was material to the patentability of one or more claims of the ' 1 81 Patent application (SN
08/965,185).

142. On information and belief, one or more of the ' 1 8 1 Patent applicants, with
deceptive intent, failed to disclose the Sibert article as prior art to the Patent Office during the
prosecution of the ' 181 Patent application (SN 08/965,185).

143. The WO 96/27155 (PCT) publication is prior art to one or more claims of
the '181 Patent application.

144. The WO 96/27155 (PCT) publication is prior art to the claims of the '181
Patent under 35 U.S.C. § 102(a).

145. The WO 96/27155 (PCT) publication is prior art to the claims of the '181
Patent under 35 U.S.C. § 1 02(b).

1 46. The WO 96/27 155 (PCT) publication was material to the patentability of
;laim 1 of the '181 Patent application (SN 08/965,185).

147. The WO 96/27155 (PCT) publication was material to the patentability of
>ne or more claims of the '181 Patent application (SN 08/965,185).

1 48 . On information and belief, one or more of the ' 1 8 1 Patent applicants knew,
vhile the '181 Patent application (SN 08/965,185) was pending, of the September 1996
jublication of the WO 96/27155 (PCT) publication.

1 49 . One or more of the attorneys who prosecuted or assisted in prosecuting the

181 Patent application (SN 08/965,185) knew, while that application was pending, of the

September 1996 publication of the WO 96/27155 (PCT) publication.

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
"29- complaint: Case No. C 01-1640 SB A

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150. The applicants forthe '181 Patent did not cite the WO 96/27155 (PCT)
publication to the Patent Office as prior art to any of the claims of the ' 181 Patent application (SN
08/965,185).

151. The applicants for the ' 1 8 1 Patent did not cite to the Patent Office as prior
art to any of the claims of the '181 Patent application (SN 08/965,185) any reference having the
same or substantially the same disclosure as the WO 96/27155 (PCT) publication.

1 52. On information and belief, one or more of the ' 1 8 1 Patent applicants
believed, while the '181 Patent application (SN 08/965,185) was pending, that the WO 96/27155
(PCT) publication was material to the patentability of one or more claims of the '181 Patent
application (SN 08/965,185).

1 53 . On information and belief, one or more of the ' 1 8 1 Patent applicants, with
deceptive intent, failed to disclose the WO 96/27155 (PCT) publication as prior art to the Patent
Office during the prosecution of the '181 Patent application (SN 08/965,185).

1 54. The '900 Patent (U.S. Pat. No. 5,892,900) is prior art to the ' 1 8 1 Patent.

1 55. The '900 Patent is prior art to one or more claims of the ' 1 8 1 Patent under
35 U.S.C. § 102(e).

1 56. The '900 Patent was material to the patentability of one or more claims of
the ' 181 Patent application (SN 08/965,185).

157. One or more of the ' 1 8 1 Patent applicants knew, while the ' 1 8 1 Patent
application (SN 08/965,185) was pending, of the '900 Patent.

158. On information and belief, one or more of the attorneys who prosecuted or
assisted in prosecuting the ' 181 Patent application knew, while that application was pending, of
the '900 Patent.

159. The applicants for the ' 1 8 1 Patent did not cite the '900 Patent to the Patent
Dffice as prior art to any of the claims of the ' 1 8 1 Patent application (SN 08/965, 1 85).

1 60. The applicants for the ' 1 8 1 Patent did not cite to the Patent Office as prior
irt to any of the claims of the ' 181 Patent application any reference having the same or
substantially the same disclosure as the '900 Patent.

Microsoft Corporation's Answer and
_ Counterclaims to intertrust's fourth amended

"30- complaint: Case No. C 01-1640 SBA

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161. The '900 Patent is not merely cumulative over any reference cited as prior
art during the prosecution of the ' 181 Patent application.

1 62. On information and belief, one or more of the ' 1 8 1 Patent applicants
believed, while the '181 Patent application (SN 08/965,185) was pending, that the '900 Patent
was material to the patentability of one or more of claims of the ' 181 Patent application (SN
08/689,754).

1 63. On information and belief, one or more of the ' 1 8 1 Patent applicants, with
deceptive intent, failed to disclose the '900 Patent as prior art to the Patent Office during the
prosecution of the '181 Patent application (SN 08/965,185).

164. The '721 Patent (U.S. Pat. No. 6,157,721) is prior art to the '181 Patent.

165. The '721 Patent is prior art to one or more claims of the ' 1 81 Patent under
35 U.S.C. § 102(e).

1 66. The '721 Patent was material to the patentability of one or more claims of
the ' 181 Patent application (SN 08/965,185).

1 67. One or more of the ' 1 8 1 Patent applicants knew, while the * 1 8 1 Patent
application (SN 08/965,185) was pending, of the '721 Patent.

168. On information and belief, one or more of the attorneys who prosecuted or
issisted in prosecuting the '181 Patent application knew, while that application was pending, of
he '721 Patent.

169. The applicants for the '181 Patent did not cite the '721 Patent to the Patent
Dffice as prior art to any of the claims of the ' 181 Patent application (SN 08/965,185).

170. The applicants for the ' 1 8 1 Patent did not cite to the Patent Office as prior
irt to any of the claims of the ' 181 Patent application any reference having the same or
ubstantially the same disclosure as the '721 Patent.

171. The '721 Patent is not merely cumulative over any reference cited as prior
it during the prosecution of the '181 Patent application.

172. On information and belief, one or more of the ' 1 8 1 Patent applicants

»elieved, while the '181 Patent application (SN 08/965,185) was pending, that the '721 Patent

Microsoft Corporation's Answer and
Counterclaims to intertrust* s fourth amended
complaint: Case No. C 01-1640 SBA

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was material to the patentability of one or more of claims of the ' 181 Patent application (SN
08/689,754).

173. On information and belief, one or more of the ' 1 8 1 Patent applicants, with
deceptive intent, failed to disclose the '721 Patent as prior art to the Patent Office during the
prosecution of the '181 Patent application (SN 08/965,185).

1 74. The '181 Patent is unenforceable due to the inequitable conduct of the ' 1 8 1
Patent applicants and/or agents before the Patent and Trademark Office in connection with the
'181 Patent application (SN 08/965, 1 85).

175. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
sxists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '181 Patent are enforceable.

COUNT XVin - DECLARATORY JUDGMENT OF UNENFORCEABILITY

176. Microsoft repeats and realleges the preceding paragraphs of its
Counterclaims, as if fully restated here.

177. The '891 Patent, the '912 Patent, the '683 Patent, the ' 193 Patent, the '861
J atent, the '900 Patent, the ''721 Patent, the '019 Patent, the '876 Patent, the '181 Patent, and the
402 Patent are referred to as the "Count XVm Patents."

178. In prosecuting, marketing, and enforcing the Count XVIII Patents,
nterTrust has engaged in a pattern of obfuscation as to the scope of the patents, the prior art to
he patents, and the alleged "inventions" of the patents.

1 79. InterTrust has accused non-infiinging products of infringement in this case.

180. InterTrust has accused non-secure products with infringement in this case.

181. InterTrust has buried Patent Office Examiners with a collection of more
lan 400 references, many of which were not related to the particular claims in issue.

1 82. InterTrust has buried the Examiners with hundreds of thousands of pages
f redundant, verbose, unclear text, effectively prohibiting a real comparison of the alleged
invention" to the prior art.

-32-

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SB A

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1 83 . This pattern of intentional conduct constitutes an abuse of the patent
system, unclean hands, misuse and illegal extension of the patent right, rendering the Count
XVIII patents unenforceable, as well as invalid under 35 U.S.C. § 1 12.

1 84. InterTrust contends that it cannot readily determine whether or not it has
ever practiced the claims it asserts in this case, as InterTrust has interpreted those claims in its
PLR 3-1 Statements.

1 85 . InterTrust contends that it cannot determine, with reasonable effort,
whether or not it has ever used its Commerce or Rights/System software to practice any of the
claims InterTrust asserts in this case, as InterTrust has interpreted those claims in its PLR 3-1
Statements.

1 86. As InterTrust has interpreted the claims it asserts in this case in its PLR 3- 1
Statements, InterTrust does not know if it has ever practiced the subject matter of the patent
claims it asserts in this case.

1 87. No InterTrust officer has a non-privileged opinion or belief as to whether
InterTrust has ever practiced the subject matter of any of the patent claims it asserts in this case.

1 88. InterTrust contends that it cannot readily determine whether or not any
entity not a party to this case has ever practiced the claims that InterTrust asserts in this case, as
InterTrust has interpreted those claims in this case.

1 89. InterTrust contends that it cannot readily determine whether or not any of
the references cited in the patents it asserts in this case describes any invention that InterTrust
asserts is disclosed in any patent it asserts in this case.

190. No InterTrust officer has a non-privileged opinion or belief as to whether
Sony (whether Sony Corporation, Sony Corporation of America, and/or Sony Music
Entertainment Inc.), IBM, Adobe, AT&T, or Real Networks has ever practiced the subject matter
of any of the patent claims that InterTrust asserts in this case.

191. No InterTrust officer has a non-privileged opinion or belief as to whether
Sony (whether Sony Corporation, Sony Corporation of America, and/or Sony Music

-33-

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA

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Entertainment Inc.), IBM, Adobe, AT&T, or Real Networks has ever practiced a noninfringing
alternative to any of the patent claims that InterTrust asserts in this case.

1 92. No InterTrust officer has a non-privileged opinion or belief as to whether
the U.S. government has ever practiced the subject matter of any of the patent claims that
InterTrust asserts in this case.

193. InterTrust has never built the "Virtual Distribution Environment" referred
to at column 2 lines 22-35 of the '193 Patent.

1 94. No Microsoft product accused in this case is a "Virtual Distribution
Environment" as referred to at column 2 lines 22-35 of the ' 193 Patent.

195. As InterTrust's PLR 3-1 Statements have interpreted the '683 Patent claims
asserted in this case, one or more of those claims reads upon references that InterTrust cited to the
Patent Office during prosecution of the '683 Patent.

196. As InterTrust's PLR 3-1 Statements have interpreted the '683 Patent claims
asserted in this case, InterTrust cannot distinguish those claims from the subject matter disclosed
in the specification of U.S. Patent 5,715,403.

197. As InterTrust's PLR 3-1 Statements have interpreted the '683 Patent claims
asserted in this case, InterTrust cannot distinguish those claims from the subject matter disclosed
in the cited reference WO 93/01550.

198. As InterTrust's PLR 3-1 Statements have interpreted the '193 Patent claims
asserted in this case, one or more of those claims reads upon the subject matter disclosed in the
specification of US. Patent 5,638,443.

199. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether the claims of the '891 Patent, the '912 Patent, the '683 Patent, the ' 193 Patent, the '861
Patent, and the '900 Patent, the '721 Patent, the '019 Patent, the '876 Patent, the ' 181 Patent, and
the '402 Patent are enforceable.

-34-

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA

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COUNT XIX - INFRINGEMENT
OF U.S. PATENT NO. 6.049,671

200. Microsoft repeats and realleges paragraphs 2-3 of its Counterclaims, as if
fully restated here.

201 . This Court has exclusive subject matter jurisdiction over Microsoft's cause
of action for patent irifringement under Title 28, United States Code, Sections 1331 and 1338, and
under the patent laws of the United States, Title 35 of the United States Code.

202. U.S. Patent No. 6,049,671 ("the '671 Patent") issued to Microsoft
Corporation as the assignee of Benjamin W. Slivka and Jeffrey S. Webber on April 1 1, 2000.

203 . A true copy of the '67 1 Patent is attached as Exhibit C to Microsoft's
counterclaims filed in response to InterTrust's Second Amended Complaint, and is incorporated

herein by reference.

204. Microsoft owns all right, title and interest in the '671 Patent.

205. InterTrust has had actual notice of the '671 Patent.

206. InterTrust has infringed one or more claims of the '671 Patent, in violation
of at least 35 U.S.C. § 271(a, b, c).

207. InterTrust's infringement of the '67 1 Patent has caused and will continue to

cause Microsoft damage, including irreparable harm for which it has no adequate remedy at law.

COUNT XX - INFRINGEMENT
OF U.S. PATENT NO. 6.256.668

208 . Microsoft repeats and realleges paragraphs 2-3 and 20 1 of its
Counterclaims, as if fully restated here.

209. U.S. Patent No. 6,256,668 Bl ("the '668 Patent") issued to Microsoft
Corporation as the assignee of Benjamin W. Slivka and Jeffrey S. Webber on July 3, 2001.

210. A true copy of the '668 Patent is attached as Exhibit D to Microsoft's
counterclaims filed in response to InterTrust's Second Amended Complaint, and is incorporated
herein by reference.

211. Microsoft owns all right, title and interest in the '668 Patent.

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
"35- complaint: Case No. C 01-1640 SBA

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212. InterTrust has had actual notice of the '668 Patent.

213. InterTrust has infringed one or more claims of the '668 Patent, in violation
of at least 35 U.S.C. § 271(a, b, c).

214. InterTrust's infringement of the '668 Patent has caused and will continue to
cause Microsoft damage, including irreparable harm for which it has no adequate remedy at law.

PRAYER FOR RELIEF
WHEREFORE, Microsoft prays for the following relief:

A. The Court enter judgment against InterTrust, and dismiss with prejudice,
any and all claims of the Fourth Amended Complaint;

B. The Court enter judgment declaring that Microsoft has not irifringed,
contributed to infringement of, or induced infringement of the '683 Patent;

C. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced mfringement of the '193 Patent;

D. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '504 Patent;

E. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '861 Patent;

F. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '900 Patent;

G. The Court enter judgment declaring that Microsoft has not mfringed,
contributed to infringement of, or induced infringement of the '891 Patent;

H. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '912 Patent;

I. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '721 Patent;

J. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '01 9 Patent;

-36-

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: CaseNo. C 01-1640 SBA

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K. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '876 Patent;

L. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '181 Patent;

M. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '402 Patent;

N.
O.
P.

Q-

R.
S.
T.
U.
V.

X.
Y.
Z.

is invalid;

The Court enter judgment declaring that the '683 Patent :
The Court enter judgment declaring that the ' 193 Patent is invalid;
The Court enter judgment declaring that the '504 Patent is invalid;
The Court enter judgment declaring that the '861 Patent is invalid;
The Court enter judgment declaring that the '900 Patent is invalid;
The Court enter judgment declaring that the '891 Patent is invalid;
The Court enter judgment declaring that the '912 Patent is invalid;
The Court enter judgment declaring that the '721 Patent is invalid;
The Court enter judgment declaring that the '019 Patent is invalid;
The Court enter judgment declaring that the '876 Patent is invalid;
The Court enter judgment declaring that the ' 181 Patent is invalid;
The Court enter judgment declaring that the '402 Patent is invalid;
The Court enter judgment declaring that the '861 Patent, the '900 Patent,
he '721 Patent, and the ' 181 Patent are each unenforceable due to inequitable conduct;

AA. The Court enter judgment declaring that each of the '891 Patent, the '912
5 atent, the '683 Patent, the '193 Patent, the '861 Patent, the '900 Patent, the '721 Patent, the '019
5 atent, the '876 Patent, the '181 Patent, and the '402 Patent is unenforceable due to an abuse of
he patent system, unclean hands, and misuse and illegal extension of the patent right;

BB. The Court enter judgment that InterTrust has infringed the '671 Patent;
CC. The Court enter judgment that InterTrust has infringed the '668 Patent;

-37-

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SBA

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DD. The Court enter a permanent injunction prohibiting InterTrust, its officers,
agents, servants, employees, and all persons in active concert or participation with any of them
from infringing the '671 and '668 Patents;

EE. The Court award damages and attorney fees against InterTrust pursuant to
the provisions of 35 U.S.C §§ 284 and 285.

FF. The Court award to Microsoft pre-judgment interest and the costs of this

action.

GG. The Court award to Microsoft its reasonable costs and attorneys' fees; and
HH. The Court grant to Microsoft such other and further relief as may be
deemed just and appropriate.

JURY DEMAND

Pursuant to Fed. R. Civ. P. 38(b), Defendant Microsoft Corporation demands a

trial by jury.

DATED: November 7, 2002

Orrick
Herrington
& sutcliffe llp

Silicon V alley

Of Counsel:

T. Andrew Culbert, Esq.
MICROSOFT CORPORATION
One Microsoft Way, Building 8
Redmond, WA 98052-6399
Phone: 425-882-8080

'WILLIAM L. ANTHONY
ERKTkWESENBERG

O'ROURKE
ORRICK HERRINGTON & SUTCLIFFE, LLP
1000 Marsh Road
MenloPark,CA 94025
Telephone: 650-614-7400

STEVEN ALEXANDER
KRISTIN L. CLEVELAND
JAMES E. GERLNGER
JOHN D. VANDENBERG
KLARQUIST SPARKMAN, LLP
One World Trade Center, Suite 1600
121 S.W. Salmon Street
Portland, OR 97204
Telephone: (503) 226-7391

Attorneys for Defendant
Microsoft Corporation

-38-

Microsoft Corporation's Answer and
Counterclaims to intertrust's fourth amended
complaint: Case No. C 01-1640 SB A

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